international application and examination - wipo · 2015. 12. 9. · locarno class non-novelty...

Geneva

November 19, 2015

Kateryna Gurinenko, Examiner

Operations Service, The Hague

Registry

International Application and

Examination

Seminar on the Hague System for the

International Registration of Industrial

Designs: Practical Approach and How to

Use It

Contents

Contents of the application

Mandatory

Additional mandatory

Optional

Reproductions

Disclaimer

Legends

Product indication

Description

Locarno Classification

New Accessions

Mandatory contents

Data concerning applicant

Reproductions

Product indication

Indication of the Contracting Parties

Filing date is affected

Additional mandatory contents

Identity of the creator

Description

Claim

Registration date is affected

Optional contents Description

Identity of the creator

Legends

Appointment of the representative

Priority claim

Declaration of disclosure at an international exhibition

Publication

Immediate

Deferred

Reproductions

Requirements concerning the reproductions

Legal Framework

Article 5 (1960 Act) / Article 5 (1999 Act)

Rule 9 of the Common Regulations

Administrative Instructions – Section 401- 405

Industrial design alone

Industrial design has to be shown against a neutral/plain background

Technical drawings, with axes and dimensions are not acceptable

Explanatory text or legends (in the reproduction) are not acceptable

Edges cut at right angles

Requirements concerning the reproductions Common for paper and e-filing

Presentation of reproductions

Color or B&W

DM/087397 “Balloons for children”

Different colors different designs

Proposal for recommendations relating to the

disclosure of an industrial design in an

international application (H/LD/WG/5/4)

Representation of the industrial design

DM/084694 “Outdoor and indoor furniture with integrated lights”

1.3

1.2 1.1

1.4

2.1

2.2

Representation of the industrial design

DM/084694 “Outdoor and indoor furniture with integrated lights”

Amendments to the administrative instructions

Section 402(b): The dimensions of the reproductions

Section 403(a)(ii) and (b): Disclaimers and matter that

does not form part of the industrial design or the

product in relation to which the industrial design is to

be used

Section 405(c): Legends

(in force on July 1, 2014)

Minimum and maximum sizes Paper application

The dimensions of the representation of each design may

not exceed 16 x 16 cm;

- for all reproductions

One of the dimensions of the representation of each

design must be at least 3 cm:

Before – for all reproductions

Now – at least for one of the reproductions

DM/084081 “Pen”

1.6

1.5

1.7

Minimum and maximum sizes

Legends (indications of views)

(Sections 402(c)(ii) and 405(c))

Legends may NOT be shown in a reproduction.

Legends may be provided in association with the

numbering of the reproduction in a specific item.

Legends: paper form

Legends: 7 Basic views

DM/084081 “Pen”

Legends: Some example of views

Enlarged view

Cross section view

DM/084170 “Air deodorizing device”

DM/084607 “Tire”

Legends: Some example of views

Exploded view

DM/078436 “Watch mechanism, namely minute

repeater movement with constant force and

disengagement lever”

Legends: Some example of views

Unfolded view

DM/078316 “Packaging for tea ”

DM/085804; “Bag”

Legends: Some example of views

Disclaimer

Disclaimer (Section 403(a))

"Disclaimer" of protection for part of the industrial

design may be indicated:

in the description (by text), and/or

by means of dotted or broken lines or coloring

Disclaimer by coloring

DM/080877 “Lid [household]”

Disclaimer by coloring and description

DM/080861 “Vehicle bodywork”

“The blue marked parts of

designs 2 to 4 are not coming

into the scope of the industrial

design (disclaimer)”

Disclaimer by means of dotted lines

and description

DM/082544; “Shoe”

“No protection is sought for the matter shown in dotted lines (disclaimer)”

Not protected elements (Section 403(b))

DM/082846 “Bags” DM/080221 “Cutlery holder”

Representation of the industrial design

The following shall NOT be accepted:

Person or animal

Technical drawings, particularly with axes and dimensions

Explanatory text or legends in the representation

Merging should be at least 5 millimeters

Cut at right angles

Shown against neutral background

Correct numbering

Product indication

Product indication

Specific

Not writing instrument, but ball-point pen

Not lightening device, but table lamp

One per design

Not carpets, mats or rugs, but bathroom mat

Not ornamentation, graphic symbols or logo, but logo

Product indication and Locarno class

DM/077837; “Ornamentation” DM/084887; “Ornamentation for packaging bags”

Class 32-00 Class 09-05

Description

Legends

Description

Description

Design 1: 1.1 front view; 1.2 top view;

1.3 bottom view; 1.4 perspective view

DM/085709; “Bottle”

Views omitted

Description

POSSIBLE description:

“Right side, top and bottom views

are omitted because they are

identical or mirror image of the left

side view”

DM/084264; “Watch dial”

Disclaimer

Description

DM/084412; “Door fittings”

Description:

Design 1: the handle and the key

hole, shown in broken lines, are not

part of the claimed design

Description

Visible features only

Description:

Bell characterized by a vertically-oriented

rectangular front panel; the panel comprises an

inscription in its upper part; underneath it there

is a vertically elongated recess, whose edges

are straight and rounded at the top and bottom

DM/085822; “Signal bell”

Description

May contain possible use in order to help understand the product

DM/084820; “Heel protector”

Description:

Heel protection designed to protect the back of shoes or sandals against rubbing or

damage while driving or traveling and to improve safe driving

Locarno classification

Locarno classification: Mono class

(class 6)

DM/083137

“Chair” “Cabinet”

“Dining table”

“Sofa” “Corner table”

Locarno classification: Multiple classes

Class 12

Class 26

DM/081329

DM/084440

DM/073710

Class 6

Republic of Korea

Related designs

Exception to lack of novelty

Declaration in the application form

paper form: item 15

possible indication of designs concerned

Supporting document

E-filing: uploading

paper form: Annex II to DM/1

Exception to lack of novelty

Exception to lack of novelty

Specific views

Declaration under Rule 9(3): Views required

Set of articles

one view showing the whole set

views showing each component

Typefaces:

view showing all the characters

view showing a sample sentence

view showing typical characters

Hybrid national system Locarno Class

Non-novelty examination

Class 2: clothing etc.

Class 5: textile etc.

Class 19: stationery etc.

Novelty examination for all other classes

Designs in the class 32 cannot obtain protection

Duration and Fee

Article 17(3)(c):

The maximum duration of protection: 20 years

Rule 18(1)(b):

The refusal period: 12 months

For the classes 2, 5, 19: 6 months

Article 7(2):

Individual designation fee: 210 CHF per design

For the classes 2, 5, 19: Level 3 standard designation fee

Japan

Exception to lack of novelty

"Declaration" in the application form (item 15)

Possible indication of designs concerned

Supporting documents: submit directly to the JPO within

30 days from the date of publication

Specific views

Declaration under Rule 9(3)

Views required: six orthographic views (front, back, right side,

left side, top and bottom views)

Priority Claim

Claim should be made in the application form (item 13)

The original document supporting a priority claim: submit

directly to the JPO within 3 months from the date of publication

Duration and Fee

Article 17(3)(c):

The maximum duration of protection: 20 years

Rule 18(1)(b):

The refusal period: 12 months

Article 7(2):

Individual designation fee: 582 CHF per design

United States of America

Declarations made by the United States of

America

Article 17(3)(c):

The maximum duration of protection: 15 years

Article 11(1)(b):

Deferment of publication: not possible

Rule 18(1)(b):

The refusal period: 12 months

Declarations made by the United States of

America

Article 13 (1):

Unity of design

Article 5(2)(a):

Claim

Rule 8(1)(a)(ii):

Identity of the creator

Oath or declaration

Declaration/Oath of the creator

Standard USPTO form in English:

http://www.uspto.gov/sites/default/files/forms/aia0001.pdf

Standard USPTO form in 11 languages:

http://www.uspto.gov/patent/forms/translated-forms-patent-

applications-filed-or-after-september-16-2012

Standard WIPO form in English, French and Spanish:

DM/1/I

Declaration/Oath of the creator

Substitute statement

Standard USPTO form in English:

http://www.uspto.gov/sites/default/files/forms/aia0002.pdf

Standard USPTO form in 11 languages:

http://www.uspto.gov/patent/forms/translated-forms-patent-

applications-filed-or-after-september-16-2012

Standard WIPO form in English, French and Spanish:

DM/1/I

Substitute statement

NO identity of creator and/or declaration/oath

No creator and/or oath irregularity notice

3 months to regularize

Registration date is NOT affected

Not regularized US designation is disregarded

Claim

US designation ONLY

No claim irregularity notice

3 months to regularize

Registration date is affected

Not regularized US designation is disregarded

Claim

Eligibility for protection

Individual designation fee

First part: at the time of international application

Undiscounted: 733 CHF

Small entity: 367 CHF

Micro entity: 183 CHF

Second part: upon notice of allowance by USPTO, to be paid

to IB of WIPO or USPTO

Undiscounted: 540 CHF

Small entity: 270 CHF

Micro entity: 135 CHF

Individual designation fee

Individual designation fee: WIPO form

Individual designation fee: USPTO form

Hague Union

49 Geneva Act (1999) (including EU and OAPI)

15 Hague Act (1960)

64 Contracting Parties